Page 44 - Mass General Brigham - Innovators Guide 1.2

44 INNO V AT O RS GUIDE | M ASS GENERAL BRIGH AM

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6 Patents

Inventorship Timeline

The criteria for a contributor to be listed as an inventor on a patent Patenting is typically a lengthy and costly process. It begins with an
application are legally defined under U.S. patent law. An inventor must internal review of an Invention Disclosure Form, analysis of what is known
have contributed to the conception of the invention. Someone who did about the subject and overall patentability. This internal review phase ends
not contribute to the conception of an invention is not considered an when either an initial application (usually a provisional patent application)
inventor, even if they were a valuable contributor to the development of is filed, or the patent process is halted. Successive stages often take years.
the invention. For example, someone who contributes to the invention If Innovation declines to pursue a patent for an invention or terminates
solely by following prescribed steps to build the invention or by conducting maintenance of an issued patent, there is a process that enables inventors
experiments to show that the invention works (but who did not contribute to secure the right to unilaterally pursue the patent should they choose to
to the conception of the invention itself) would not be considered an do so. Licensing Managers can provide details for this process.
inventor under U.S. patent law.
Inventorship is different than authorship; often, authors on a journal
article describing an invention may not be considered inventors under U.S. Strategy
patent law. It is important to define and list inventors properly on a patent
application, as incorrect inventorship can invalidate a patent. Innovation Patent strategies are set based on patentability, markets, opportunity for
teams will work to determine who should be listed as an inventor in the an innovation and freedom to operate. Enhanced strategies such as “picket
patent application to meet legal requirements. fences” and “patent estates” may be adopted for certain high potential
IP assets.

Inventor share A picket fence is a type of patent strategy in which a patent applicant or
owner tries to block competitors from designing around the claims of an
original patent by filing a series of patent applications that vary in claim
At Mass General Brigham, when disclosing an invention, the principal scope around the original core invention.
investigator is asked to specify the relative contributions of the multiple
inventors. That contribution designation becomes the basis for potential A patent estate refers to the complete patent rights owned by a person
financial distribution should the technology generate commercialization or entity.
revenue. There is a policy and related procedure involving hospital
leadership to resolve disputes among inventors regarding
their relative contribution.